Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

NOTICE OF INCOMPLETE STATEMENT OF USE

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID THE DENIAL OF YOUR STATEMENT OF USE, WE MUST RECEIVE A PROPER RESPONSE TO THIS NOTICE WITHIN THIRTY (30) DAYS OF THE ISSUE/MAILING DATE.

ISSUE/MAILING DATE: 3/8/2018

U.S. Serial Number  87442293

The statement of use filed on January 3, 2018, meets the minimum filing requirements and is provisionally accepted.  However, to avoid abandonment of the application, a response satisfying the deficiencies stated below must be received in the United States Patent and Trademark Office (USPTO) within thirty (30) days of the issuance date of this letter.

STATEMENT OF USE IS DEFICIENT AS FOLLOWS:

FILER’S NAME DIFFERS FROM CURRENT OWNER NAME – CLARIFICATION REQUIRED:  The owner of the mark shown in Office records is “Hangzhou Binli Industrial Co., Ltd;” however, the party who filed the statement of use is identified as “Hangzhou Chen Mai Mechanical and Electrical Equipment Co., Ltd..”  The party who files a statement of use must be the owner of the mark at the time the statement of use is filed.  See 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88; In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, the statement of use cannot be accepted because it was filed by someone other than the owner of record. 

The filer must clarify whether it was the owner of the mark at the time the statement of use was filed.  Evidence to establish ownership can be provided after the expiration of the deadline for filing the statement of use, if the statement of use was filed by the true owner.  See 37 C.F.R. §§3.71, 3.73; TMEP §1109.10. 

FILER WAS OWNER:  If the filer of the statement of use was the owner at the time of filing, this party must submit evidence to establish that it has clear chain of title, as follows:

(1)  Record an assignment or other document of title with the Assignment Services Branch showing clear chain of title to the party filing the statement of use, and promptly notifying the undersigned that such documentation has been recorded (requests for recordation can be filed online at http://etas.uspto.gov.); or

(2)  Submit evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or signed declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use.

37 C.F.R. §3.73(b)(1); TMEP §§502, 502.01; see 15 U.S.C. §1060; 37 C.F.R. §2.193(e)(1).  Please note that a new owner must record the assignment, change of name, or other document affecting title with the Assignment Services Branch of the USPTO to obtain a certificate of registration in the name of the new owner (or in applicant’s new name).  37 C.F.R. §3.85.

A response to this Office action must still be submitted, even if an assignment or other document of title is recorded.

FILER WAS NOT OWNER:  If the filer of the statement of use was not the owner of the mark at the time of filing and:

(1) there is time remaining in the statutory period, the true owner must file a new statement of use within the statutory period to avoid abandonment of the application.  See 15 U.S.C. §1051(d); 37 C.F.R. §2.88.  The time for filing a statement of use expires on May 14, 2018; or

(2) there is no time remaining in the statutory period, the application will be abandoned for failure to file a statement of use and the true owner may file a petition to revive the application under 37 C.F.R. §2.66.

Applicant is strongly encouraged to review Section 1201.02(c) of the Trademark Manual of Examining Procedure (TMEP) for correctable and non-correctable errors in how the applicant is identified.  The TMEP is available online at the USPTO website at http://tess2.gov.uspto.report/tmdb/tmep/.

ENSURE TIMELY SUBMISSION OF RESPONSES AND PETITIONS:  Please note that the filing date of a document in the United States Patent and Trademark Office is the date of receipt in the Office, not the date of deposit in the mail.  37 C.F.R. §2.195.  To avoid lateness due to mail delay, applicant is encouraged to submit its response by fax, using a certificate of facsimile transmission on the response.  The fax number is 571 273 9550. 

The following is a properly worded certificate of facsimile transmission.  Applicant should add this certificate, properly completed, to its response before transmission.

CERTIFICATE OF FAX TRANSMISSION:

I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office on the date below.

________________________________

Signature

________________________________

Print/Type Name of Signer

________________________________

Date

If applicant intends to submit its response via regular mail, then applicant is encouraged to use a certificate of mailing on the submitted documents.  37 C.F.R. §2.197.  The following is a properly worded certificate of mailing for responses submitted on paper by regular mail. 

CERTIFICATE OF MAILING:

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:  Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA, 22313-1451, on the date below.

________________________________

Signature

________________________________

Print/Type Name of Signer

________________________________

Date

There is time remaining in the statutory time period for filing a statement of use.  Applicant must respond to the outstanding issues raised in this Office action within the specified time period to avoid abandonment of the application. 

How to respond to this Office action:

Online:  Applicant is encouraged to use the Trademark Electronic Application System (TEAS) to respond, located at http://teasg.gov.uspto.report/gf/spring/nonteas?type=preSelected&id=ISC0ROAI.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  Do not respond by e-mail; USPTO does not accept e-mail responses.  For technical assistance with the online form, e-mail TEAS@uspto.gov.

TEAS Plus/TEAS RF Application:  To maintain the reduced fee status, TEAS Plus/TEAS RF applicant must respond online via TEAS.  Otherwise, applicant is subject to an additional $125 fee for each class.  37 C.F.R. §§2.6(a)(1)(v),  2.22(c), 2.23(c); TMEP §§819.04, 820.04.

Check the Status of the Application:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application any time using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.

Please call the undersigned with any questions. 

/Concetta A. Butler/

Paralegal Specialist

ITU/Divisional Unit

571 272 9494

571 273 9494 (fax)

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Intent-to-Use (ITU)/Divisional Unit Office action form number 8 at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.  All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by (1) an individual applicant; (2) someone with legal authority to bind applicant (i.e., a corporate officer, a general partner, all joint applicants); or (3) an authorized attorney, if one is appointed to represent applicant.  If an applicant is represented by an attorney, the attorney must sign the response. 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Status and Document Retrieval (TSDR) at http://tsdr.gov.uspto.report/.  Please keep a copy of the complete status screen.  If TSDR shows no change for more than six months, call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED ITU STAFF MEMBER IDENTIFIED ABOVE.